Trademark Classifications in India

In India 4th Schedule to trademarks rules, 2002 provides the classification of goods and services.

It has about 45 classes out of which class 1 to 34 deals about the classification of goods and class 35 to 45 deals with the service sector. Generally service marks can be obtained for the services falling under the classes 35 – 45.

Good sectors (Class 1- 34) :

This is a broader section – classification of goods according to their nature and materiality of the content.

Class I : deals with the chemical industry, science and photography and the like.

Class 2 : this class deals with the goods related to paints/ varnishes

Class 3: Bleaching preparations and cosmetics are dealt under class 3

Class 4: Oils related to industry and other lubricants which are used in industries are placed under this section.

Class 5: Goods related to pharmaceutical and sanitary works are settled in this class

Class 6 : Metal goods and alloy materials

Class 7: Machines, Machine tools, motors and engines and other related goods are placed here

Class 8: hand tool implemented goods are settled in this class

Class 9: Scientific, data processing equipments and the like are placed in class 9

Class 10: deals with Surgical instruments

Class 11: Apparatus used for lighting, heating and water supply

Class 12: deals with the vehicles, air or water

Class 13: fire arms and the like are structured in this class

Class 14: This class deals with precious metals and alloys , but one must understand that it varies from the goods specified under Class 6.

Class 15: deals exhaustively with Musical Instruments

Class 16: Paper and other related works which are not included in other classes can be placed under this class

Class 17:  Rubber, asbestos and other semi materials are placed under class 17

Class 18: Leather and its by-products are synchronized in this class

Class 19: Building materials, non-metal are covered in this class

Class 20; Furniture, mirrors and picture frames are classified here

Class 21: household/kitchen utensils

Class 22: Nets, ropes, strings are structurally classified here.

Class 23: yarns and threads used for textile purpose are classified under section 23

Class 24: Textile goods and textiles which are not mentioned in other classes are eligible under this class

Class 25: deals with clothing and footwear

Class 26: ribbons, hooks and other like goods are sided here

Class 27: Carpets and other related matting goods are classified in this section

Class 28: decorations, games, plaything which are not included in other classes are included in class 28

Class 29: Meat, fish and poultry products are classified in this section

Class 30: Coffee, tea and other food related goods are classified under this class

Class 31: Agricultural and horticultural products which are not included in previous classes are characterized here.

Class 32: Beers, minerals and non-alcoholic beverages and by-products are settled here.

Class 33: deals with Alcoholic beverages except beer

Class 34: deals with Tobacco, smokers’ articles, matches are structured here.

Service sectors:

Class 35: deals with Advertising, business management, administration etc.

Class 36: This class deals with the Insurance and financial service sectors

Class 37: Construction of building and other related repairs

Class 38: Telecommunication Sectors

Class 39: Transport packaging and storage of goods and likely matters

Class 40: deals with treatment of materials (this is an exhaustive class)

Class 41: classifies the Education sector

Class 42: Technological and Scientific sectors

Class 43: Accommodation/Hospitality service providing sectors

Class 44: Medical services (exhaustive class which also includes veterinary, horticulture service areas)

Class 45: last but not the least, the last section in service class deals with Legal Services.

This miniature classification of trademarks is made mainly for the ease of applicants to classify their applications accordingly. It softens the work for the controller also to grant the marks in the appropriate classification.

How to do a trademark search

TRADEMARK SEARCH

Have you ever thought that you will be known for your trade mark? Doing business of your entire product under a particular mark? But how will one know it’s already existing, or your mark is used by some else, etc. For that you have to determine first about your trademark and a trademark search helps in that.

An appropriate, dynamic, distinctive, memorable and unique trademark will always add on to the goodwill of the company. When your trademark brings goodwill to you it shows the support of millions of people and their trust in you. Here comes importance of making your own innovative trade mark and for that you need to do a trademark search. The search facility helps in getting information of availability of certain trademark and the registration criteria under various local laws making you sure that your trade mark is distinctive and diluted.

HOW TO DO A TRADEMARK SEARCH

The comprehensive search method help you to identify that the proposed trademark name or logo you want to trade is already in use and can it be protected under trademark registration. Also helps in getting an overview of similar trademark to know whether your mark will infringe another’s right .a “full” or “comprehensive” search that will cover additional commercial and marketplace resources, such as the
Business/trade name, databases, Trade directory databases, Domain name register searches, The Internet, including databases such as (amazon.com, bing.com, google.com, yahoo.com, and social networking websites), Telephone directory databases, Financial status checks; and/or ,Discreet market investigations .such advance search gives you confidence in your trademark and protective use for the same.

Certain factors are to be noted while doing trademark search which includes the nature of the trademark which includes word, a logo, in stylized script, or a combination of features.
To see that the meaning of a trademark and, if relevant, its translation into a local language. It is important to consider if the trademark has any adverse meaning in the local language or if the translation might constitute a term that is generic, descriptive, non descriptive, or deceptively mis descriptive and if the mark includes an acronym, what the acronym stands for are all relevant thing to be noted in to have an effective search.

To have a rare trademark to be available for use and registration in all countries of interest for all the goods and services intended to be used in commerce. At times, an alternative trademark will be required in some countries. A trademark professional will be able to assist with the trademark search and for the choice and clearance of a trademark to ensure that strategic and commercial objectives are reached.

Do you wish to know how to do a trademark search. Biz and Legis trademark attorneys can help you. Call 09847182002, for quick consultation.

Click here for Trademark Search India

Trademark data base

It is a database maintained by US Patent and Trademarks office which beholds all the detailed lists of the trademark registered in the US office. This database is made public/online for the people to carry out a trademark search before they apply for trademark registration.  (Although it is not always necessary to search in the database before trademark registration, but it is wise to take a search in the database before you apply for the registration). Online directory, Trademark Electronic Search System (TESS) which provides texts and images of the registered trademarks in the USPTO is of great use when you are registering for trademarks.  The trademarks search is open for the public in USPTO in which the public can search for the database. This search is usually carried out by the private agencies for a nominal fee.

Points to be remembered

  • This is a soul process in the registration of trademark.
  • Searching the database before hand helps you to design your TM in a unique way. Or else you will have to make modification to the item you are registering for trade mark.
  • One must also understand that only marks which are ‘alive’ must be taken into account and those marks which is ‘not in use’ has nothing to do with the new registration.
  • Trademark is the face value of your business so creating it with uniqueness can only be achieved through an effective search of trademarks registered.

Assignments on the web: (AOTW) – this is the collection of the recorded trademark assignment. This database is also available for the public search in USPTO

Design Search Code:

This type of search is carried out only when there is an involvement of any designs in the registration of trademark.

Methods for searching in Trademark data base

TESS database provides certain tips for the online users to checklist.

  • Select basic word mark search if you are a new user
  • Select Word and/or Design Mark Search if you are searching for both word and design or either of this.
  • Select Word and/ or Design mark Search if you opt for multiple search fields.
  • Select Browse dictionary if you like to limit your search to particular field/or you can search for all fields if you require.

You can select OG Publication date for searching official Gazette for registered marks.

What Marks can Easily Trademarked

What Marks can Easily Trademarked

Any name including the personal name, surname, predecessor’s name or signature of the person can be used as trademarks. An individual, business organization, or any legal entity can be the trademark owner. A trademark can be located in a package, a label, a voucher or on any product itself. It can also be displayed on company buildings.registered trademark

Keep in mind that trademarks  should be apt for the business. Trademarks serve to identify a particular business as the source of goods or services. It can also be any invented word or arbitrary dictionary word which does not directly represent the general quality of the products. Apart from these any letters or numerals or any combination thereof, devices, monograms, combination of colors or combination of colors and words, graphically represented sound marks, 3 dimensional signs and shape of goods and their packing can also be used. What Marks can Easily Trademarked

If you need a legal consultation with our trademark attorneys, or if you have any doubts on how to choose a Trademark, or what marks can be Trademarked, just call us on 9847182002 or fill up the contact us form.

How to choose a Trademark

how to choose a trademarkhow to choose a trademark

The important step  of every business is their brand name, there are lot of discussions about how to choose a trademark, Trademark is usually regarded as a visual symbol a design, emblem, picture emblem or logo which is used by a particular company to make their products distinct from similar products made by other companies. We can’t trademark a symbol or a design of other companies, that will affect our companies reputation.

Keep this in mind while choosing a Trademark

Do we remember anything which is hard or difficult for us? Absolutely no. So the trademark should be very easy to remember.

A Repetition? A trademark should make itself distinct from the similar trademarks.

What about a geographical name? We do not have right over a geographical area.

Image on hearing the name. The trade marks should be such that we should have an idea about its image or structure on hearing its name or seeing the logo.

The trademark should not create confusion in the mind of public and it should be in public interest.

A trademark that have no relation to your company or company product is very bad, many companies have logo that has no relation to their product or brand, your trademark should attractive to your consumers. So make sure that our trademark is meaningful and related to our business.

Trademark Renewal Service

trademark renewal serviceWe at Biz & Legis provide services for renewal of once registered trademarks. The brand owner of a particular service can be identified using the trademark. A trademark after registering it with the Trademark Registry has to be renewed every 10 years. Otherwise your trademark would be at the risk of removal from Trademark register. Big and Legis will help you in your trademark renewal service. We also provide you the facilities like informing next renewal date which help you in checking your trademark expiry date. Trademark renewal service can only preserve the rights which are available only to a registered mark.

Avail Trademark Renewal Service and protect distinctive Trade sign

For your trademark to be in force, renew it at the 10th anniversary of its registration. Thereafter every ten years as long as you want it to be in service. We provide renewal services of trademark. Enjoy the benefits of a trademark uninterruptedly. Try to monitor the expiry date of your Trademark. You may loose ownership of a Trademark if have failed to renew your registered trademark. You can avail trademark renewal service from Biz and Legis. Our attorneys will inform you before your next renewal date. If you have already lost or registration got cancelled due to non renewal, Just contact our online attorneys or clear your doubt over phone.

For more details you may also read on Trademark Renewal India or contact our attorneys at 9847182002 for getting a trademark renewal service.

How long does trademark registration last

How long does trademark registration will last

how long does trademark registration last

A trademark registration can last for an unlimited term if the owner continues to use the mark to identify the goods or services.

The usual term of a federal trademark registration is ten years. However, the registration can be kept alive by following certain terms of renewal. Between the fifth and sixth year after the date of the first trademark registration, the owner must file an affidavit and by paying an added fee to keep the registration alive. The registration gets cancelled if the owner misses to file an affidavit. However, the owner gets a grace period of six months to file an affidavit after the completion of sixth or tenth year, by paying an extra fee. You can read more on how long does trademark registration last or you can know more from from WIPO.

Protect the distinctive sign representing your business because it’s legal protection and ownership is very important for your business and trade. Your sign functions as indicating factor for your goods and services. Use proudly your trademark with your goods and services after registering it. Because your trademark is your identity and it differentiate your good from other providers and competitors.

When and how can one party use another’s trademark

Generally, trademark rights merely regulate commercial use of the name. A trademark can be referred by a person for a legal, non-infringing motive as long as no more of the trademark is used than what is necessary for the purpose.

The trademark version of the “fair use” doctrine protects the trademark from unfair uses as is done by marketing competitors. Trademark owners set their own policies themselves as to how their trademark may be used. Following are some conventional ways in which a non-owner might be authorized to use a trademark:

  • Use correct trademark and service mark symbols-The symbol ® be used only if the trademark is federally registered and it must be placed after the trademark name. It is not legal to use the symbol if the trademark is not federally registered with the USPTO. Instead TM   must be used for trademarks and SM   for service marks.

As the trademark appears in the USPTO registry, the trademark should not be abbreviated, hyphenated or misrepresented in any additional ways which would mislead or puzzle the customers. Hope you understand When and how can one party use of another’s trademark.

What is a trademark specimen related to services

What is a trademark specimen and how does it related to goods and services

To register a trademark federally a proof (specimen) has to be submitted before the U.S Patent and Trademarks Office (USPTO). It should be an original example that clearly shows how the trademark will be used relating to the goods or services mentioned in your application.

  • PRODUCTS OR GOODS SPECIMEN

If your business is products related, agreeable specimens include photographs of packaging labels, clothing tags, or labels on your products containers that apparently display your trademark.

  • SERVICES SPECIMEN

In case of providing services, a sign, business card, website, brochure, advertisement etc connected with the service mentioned in the application can be submitted as specimen before USPTO. It must be ensured that a specimen has a reference to the service mentioned in the application. If you wish to know more about what is a trademark specimen related to your services, just call our trademark service wing.

 

How do I know if I need trademark or copyright protection

Trademark and copyright registrations are both ways of protecting your intellectual property rights. However, there are certain basic differences between the two.

Trademark or Copyright Protection

Copyrights are a mode of protection for the authors of “original works of authorship” which include literary, artistic, musical, dramatic, and few other creative works. Copyright does not shield intellectual property such as titles, names, short phrases and slogans or mere contrast of typographic ornamentation, lettering or coloring. These kind of intangible properties are more adequately protected by trademarks.

A trademark shields a word, phrase, symbol or design that recognizes and characterizes different goods or services.

However, certain things such as complex logos require both trademark and copyright for its protection. Call our trademark desk can know more on How do I know if I need trademark or copyright protection.

Is Indian Trademark registration valid outside India

Is an INDIAN Trademark registration valid outside the INDIA

An Indian trademark is valid only in India though the application made in India can be used for trademark registration in other countries. A trademark registered in India cannot get protection in foreign countries. A separate application has to be filed in each of the countries where the business is intended to be run. Convention priority can be claimed if the foreign application is filed within six months from applying for Indian registration.

For knowing more on Indian trademark registration validity, contact our trademark attorney get free consultation on Indian trademark registration validity outside India.

How can the application for registration be opposed

A trademark registration process includes publication of the trademark to check for oppositions from the public or other trademark owners. Through this publication third parties get a chance to contest the application to obstruct the trademark from being registered. Third parties can bring opposition measures to guard their own brands and trademarks, depending on the circumstances. If no trademark opposition is filed then the trademark progresses for its registration.

Do I need to register my trademark

Trademark Registration Need

You can build rights in a mark by authentic or legal use of the mark. However, owning a federally registered trademark would do well to your business. Following are the several advantages you enjoy if your trademark is federally registered.

  • Effective notice to the public of the registrant’s claim of the ownership of the trademark.
  • A legal identity of the registrant’s ownership of the mark and his right to use the mark throughout the nation in relation with the goods or services mentioned in the registration application.
  • The ability to bring an action in the federal court with regard to any infringement of the rights over the mark.
  • The right to use the US registration as a ground to obtain registration in foreign countries.
  • The right to file the registration with the Customs service to prevent import of infringing foreign goods.

Need of Registering a Trademark

How long does it take for a trademark to be registered

It takes about 12 to 18 months to get the trademark application processed and registered. It depends on various factors like objection from Registry or third parties.

What is considered a trademark conflict

A trademark distinguishes a business, company, product or service from those of its competitors. Similar trademarks or designs often mislead consumers worldwide.

When a third-party is found to be using a trademark similar to yours, there are chances of the business owner getting involved in a trademark conflict. Thus, it is a conflict between two companies or business over similar trademarks.

Why do I need to search other trademarks

Why do I need to search other trademarks

It is always advisable to determine whether another business or a company already has the trade mark which you intend to use for your business. It must be ensured so that you don’t violate any other trade mark rights.

In case you are found to be a violator then you could be forced by the law to stop using the trademark, which is the least punishment you could get. The punishment in such cases is often decided depending upon how long and how well you had used that trademark in your business.

Such punishments could be costly as you will have to change your products, brochures, name plates etc related to your business.

In case of violation of a globally registered trademark then the court would assume that you already knew about it before using it improperly. In such instances the punishment would be higher.

Also Read  – Role of Trademark Attorney in Registration

Indian trademark Act – Criminal Offences

What all are the criminal offenses under Indian trademark Act ?

Registering a Trademark gives the owner exclusive right over the mark for his goods/services. A person whose mark is registered can place ® near the mark, but using this symbol near an unregistered mark is an offense. A registered trademark being infringed can bring legal action against the infringer. The police can take legal action against the person who is infringing the rights of the registered user. An action can be taken for an unregistered trademark through common law of passing off. To proceed with passing off the burden of proof is heavier then the infringement.

A suit of infringement can be filed before the District Court or High Court, within the territorial jurisdiction. The owners have the right to initiate criminal prosecution against the infringers. The Act recognizes that criminal complaints can be filed for falsifying and falsely applying Trademark, applying false description, applying false indication of countries origin etc.

The Code of Criminal Procedure provides imprisonment starting from 6 months which can be extended to three years or fine of fifty thousand which can be extended to two lakhs or both.

Trademarks Licensing and Assignment in India

What is the difference between licensing and assignment of Trademarks in India ?

Trademark Licensing in India

A trademark license can be defined as an agreement whereby the trademark owner authorizes another person or persons to use a mark. A trademark license usually, but not necessarily, contains several conditions such as exclusiveness,  consideration, quality standards, the way  in which the trademark may be used and consideration, quality standards, the way  in which the trademark may be used. Recordal of trademark Licensing is not mandatory in India. If the mark is registered then a Registered User Agreement can be recorded with the Registrar of Trademarks. It is advisable to record the registered user agreement, as the User may not be able to initiate any Legal proceedings independently. The Trademark License is given for a specific period of time, at which the Trademark owner can transfer certain rights to a third party by way of License. Trademark License is given for a specific period of time, at which the Trademark owner can transfer certain rights to a third party by way of License.

Trademark Assignment in India

An assignment is a transfer of ownership of a trademark application or trademark registration from one entity to another. Section 2(b) of the Trademark Act 1999 describes an assignment as assignment in writing by the act of the parties concerned. Section 37 of Trademark Act gives the right of a registered proprietor to assign the Trademark for any consideration. The Trademark on being assigned gives the complete right over the mark to the assignee. Recordal of assignment with the Trademark Registry is compulsory in India. Recordal of assignment becomes compulsory as there is change in ownership of the Trademark, and all the rights of the mark automatically devolve to the new owner.

The difference between Trademark Assignment and Trademark License are:-

1. Assignment of a Trademark basically means selling the complete ownership. Licensing of Trademark means renting of the Trademark.

2. The assignment deed must be compulsorily in writing. License is not required to be in writing.

3. Assignment of Trademark can be made wholly or partly, License is giving the rights for a specific period of time

4. Assignment of trademark is not time sensitive, ones assigned the ownership is completely gone. Licensing is only for a limited period of time.

History of Indian Trademark Law

The Trademark Act 1940 was the first statute law on Trademarks in India. Prior to this Act Trademark was governed by common Law.Registering a Trademark was obtained by giving a declaration to ownership under the Indian Registration Act 1908. The above said enactment was amended by Trade Marks Amendment Act 1943. Initially the Trademark registry was a part of patent office, which was later separated to constitute a separate trademark registry. Thereafter the Act was amended by the Trade marks Amendment Act 1946.

The Trademark Act 1940 was replaced by the Trade and Merchandise Act 1958. The Trade and Merchandise Act 1958 was brought into force on 25th November 1959. Later on few minor amendments were carried repealing and amending Act 1960.

The Trade and Merchandise Act, 1958 was revised by a new Trademark Act 1999. The new process of new Trademark Act started with an intention to improve the Trademark Act in the fast developing economy. The main intention is to bring developments in trading and commercial practices, globalization of trade and industry. The new bill passed by both the houses which was assented by the President and became a new Act called Trademarks Act 1999.

The Trademark Act 1999 is governed by Trademark Rules 2002, it came into effect on 15th September of 2003.The Indian Trademark is now fully compatible with International standards of TRIPS Agreement.